Deeper, UAB v. Vexilar, Inc.

Trials@uspto.gov 	Paper 7
Tel: 571-272-7822 	Entered: January 24, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
DEEPER, UAB,
Petitioner,
v.
VEXILAR, INC.,
Patent Owner.
____________
Case IPR2018-01310
Patent 9,628,592 B2
____________
Before JUSTIN T. ARBES, BARBARA A. BENOIT, and
JOHN R. KENNY, Administrative Patent Judges.
KENNY, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
Deeper, UAB (“Petitioner”) filed a Petition (Paper 1, “Pet.”),
requesting an inter partes review of claims 1–23 (“challenged claims”) of
U.S. Patent No. 9,628,592 B2 (Ex. 1001, “challenged patent”). Pet. 1.
Vexilar, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 6,
“Prelim. Resp.”).
We have been delegated the authority to determine whether to
institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a).
Having considered the Petition, the Preliminary Response, and the evidence
of record cited therein, we determine that Petitioner has demonstrated a
reasonable likelihood of prevailing with respect to only two of twenty-three
challenged claims as to only one of four asserted grounds of unpatentability.
Under the circumstances, we decline to institute an inter partes review.
II. BACKGROUND
A. Related Proceedings
Neither party identifies any related proceedings. Pet. 64; Paper 3, 2.
B. Overview of the Challenged Patent (Ex. 1001)
The challenged patent is directed to a water regimen detecting device,
which can detect fish. Ex. 1001, 1:8–35. According to the challenged
patent, prior art water regimen devices typically communicated with users
via wired means of communication, which were difficult to assemble or
apply. Id. at 1:13–22. The challenged patent indicates that although some
prior art water regimen devices used wireless communications, those
devices performed amplitude-shift keying (ASK) modulation, which created
wireless interference and transmission errors, and, as such, those devices
could only support communication over a short distance. Id. To overcome

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these problems, the challenged patent utilizes WIFI. Id. at 1:33–35. Figure
2 of the challenged patent is reproduced below:
Figure 2 is a block diagram of a wireless water regimen detecting
system that uses WIFI. Ex. 1001, 2:65–67. Wireless water regimen
detecting device A includes fish finder module 10, data communication
module 20, and WIFI module 30. Id. at 3:15–54, 4:17–21. Fish finder
module 10 includes sonar sensor 11, speed sensor 13, temperature sensor
15, and their associated processing circuits. Id. at 3:38–47. Fish finder
module 10 also includes GPS module 17. Id. at 3:47–48. Data

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communication module 20 includes MCU processor 22. Id. at 3:48–54.
Intelligent display terminal B contains WIFI transceiving circuit 40, which
communicates wirelessly with WIFI module 30. Id. at 3:15–25, 4:17–26.
C. Illustrative Claims
Claims 1, 19, and 22 are the independent, challenged claims, which
are reproduced below:
1. 	A wireless fish finder device configured to be deployed
on water and to communicate with a remote terminal using
WIFI, the wireless fish finder device comprising:
a housing configured to be deployed on water;
a fish finder module arranged at the housing and comprising
a temperature sensor and a temperature processing circuit
mechanically connected to the temperature sensor;
a data communication module arranged in the housing and
mechanically connected to the fish finder module; and
a 	WIFI 	module 	arranged 	in 	the 	housing, 	mechanically
connected 	to 	the 	data 	communication 	module, 	and
configured to generate a WIFI hotspot to communicate
between the housing and the remote terminal.
19. A water-based detecting method using WIFI, the
method comprising:
converting an analog signal detected by a sonar sensor of a
fish finder module arranged at a housing deployed on
water into a digital signal using a sonar detecting circuit
arranged at the housing;
converting the digital signal into a sonar data package with
the sonar detecting circuit;

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generating a WIFI hotspot at the housing to transmit the
sonar data package from the fish finder module at the
housing to a remote terminal;
sending the sonar data package in one detecting period;
converting a thermal effect detected by a temperature sensor
to a temperature value at a temperature processing circuit
arranged in the housing; and
sending the temperature value to the remote terminal via the
WIFI hotspot
22. 	A 	wireless 	fish 	finder 	device 	configured 	to 	be
deployed on water and to communicate with a remote terminal
using WIFI, the wireless fish finder device comprising:
a housing configured to be deployed on water;
a fish finder module arranged at the housing and comprising
a sonar sensor and a sonar detecting circuit mechanically
connected to the sonar sensor;
a data communication module arranged in the housing and
connected to the fish finder module; and
a WIFI module arranged in the housing, connected to the data
communication module and configured to generate a
WIFI hotspot to communicate between the housing and
the remote terminal;
wherein the wireless fish finder device is capable of being
wirelessly connected to the remote terminal by a WIFI
transceiver 	circuit 	wirelessly connected to 	the 	WIFI
module of the wireless fish finder device, the remote
terminal having a display screen and a downloadable
application for user control of a sonar data package from
the wireless fish finder device.

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D. Prosecution History of the Challenged Patent
The prosecution of the challenged patent resulted in a number of
Office Actions and Amendments, certain aspects of which are relevant to
our analysis of Petitioner’s asserted grounds. In our discussion here, we
focus on the rejections (and the amendments made in response to those
rejections) of claim 1: under 35 U.S.C. § 102(b) for anticipation by
U.S. Patent Publication No. 2006/0191185 A1 to Hansen (Ex. 2003), under
35 U.S.C. § 102(e) for anticipation by U.S. Patent No. 8,433,463 B1 to
Lieberman (Ex. 3001), and under 35 U.S.C. § 112 ¶ 1 for a lack of written
description support for the claims reciting the term “WIFI hotspot.”
We address the prosecution of claim 1 as illustrative of the prosecution
of the challenged claims as a whole. We address the anticipation rejections
based on Hansen and Lieberman because those rejections and their
responsive amendments demonstrate the importance during the prosecution
history of the recited relationships amongst the elements of claim 1. For
example, claim 1 recites “a fish finder module arranged at the housing and
comprising a temperature sensor and a temperature processing circuit
mechanically connected to the temperature sensor.” As set forth below,
Applicant amended claim 1 to require that the fish finder module comprises
a temperature processing circuit in response to an anticipation rejection
based on Hansen, and Applicant added the limitation that the temperature
processing circuit is mechanically connected to the temperature sensor in
response to an anticipation rejection based on Lieberman.
We address the rejection of claim 1 under 35 U.S.C. § 112 for a lack of
written description support for the claims reciting the term “WIFI hotspot”
and Applicant’s response to that rejection because the parties dispute the

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construction of term “WIFI hotspot” and each party cites to the prosecution
history to support its proposed construction. Pet. 6–7; Prelim. Resp. 13–14.
Petitioner cites to Applicant’s response to the written description rejection.
Pet. 6–7. Patent Owner cites to Applicant’s response to a rejection of claim
1 as anticipated by Hansen. Prelim. Resp. 13.
As background, the challenged patent issued from U.S. Patent
Application No. 13/980,576, filed in July 2013, which was the U.S. national
phase application for PCT Application No. PCT/CN2013/070667, filed in
January 2013. Ex. 1001, 1; Ex. 1002, 9, 13. 1 With the U.S. national phase
application, in July 2013, Patent Owner filed a preliminary amendment that
set forth the first version of claim 1 to be examined during U.S. prosecution
(“original claim 1”):
1. A wireless water regimen detecting device based on WIFI,
comprising a fish finder module, a data communication module
connected 	to 	the 	fish 	finder 	module 	and 	a 	WIFI 	module
connected to the data communication module.
Ex. 1002, 82–89.
In December 2014, the Examiner rejected original claim 1 as being
anticipated by, inter alia, Hansen. Ex. 1002, 176, 178. Figures 1 and 2 of
Hansen are reproduced below:
1 For Exhibit 1002, we cite the page numbers that Petitioner added to the
lower right hand corner of each page, but omit the prefix FX (e.g., we cite
FH00009 as 9).

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Figures 1 and 2 are an illustration and a functional block diagram,
respectively, of a downrigger assembly. Ex. 2003 ¶¶ 7–8. The illustrated
downrigger assembly includes weight 1; line, rope, or wire 2; pulley wheel

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3; stiff pole or boom 4; reel 5; line clip 10; fishing line 11; fishing pole 12;
lure or bait 13; temperature sensor 110; processor 201; data interface
circuitry 203; fish finder module 230; and GPS module 235. Id. ¶¶ 21, 26,
28. In Figure 2, conductor 111 connects temperature sensor 110 to
waterproof connector 112. Id. ¶¶ 34, 96. Hansen describes alternatively
using a WIFI transceiver instead of waterproof connector 112. Id. ¶ 34.
In the December 2014 Office Action, the Examiner mapped Hansen’s
fish finder module 230 and WIFI communications to the fish finder module
and WIFI module recited by claim 1, respectively. Ex. 1002, 176, 178. In
response, in April 2015, Applicant amended claim 1, adding the limitation
that the fish finder module comprises a temperature sensor and a
temperature processing circuit. Ex. 1002, 195, 197, 263. The amended
claim read:
1. A wireless water regimen detecting device based on WIFI,
the wireless water regimen comprising:
a fish finder module comprising a temperature sensor and
a temperature processing circuit connected to the temperature
sensor;[,]
a data communication module connected to the fish finder
module; and
a WIFI module connected to the data communication
module.
Ex. 1002, 195, 197, 263.
In May 2015, in a final rejection, the Examiner rejected amended
claim 1 as, inter alia, anticipated by Hansen. Ex. 1002, 270–271, 273. The
Examiner stated that in Hansen, “the temperature sensor is a standalone unit
which inherently/must comprise[] a processing unit for processing
temperature or processing temperature by processor 201 (fig. 2, paragraph
28).” Id. at 273.

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In response, in July 2015, Applicant proposed amending claim 1, but
the Examiner denied entry of that proposed, after-final amendment.
Ex. 1002, 294–310, 314. In August 2015, Applicant filed a Request for
Continued Examination and an Amendment, which amended claim 1 as
follows:
1. 	A wireless water regimen detecting device based on
WIFI, the wireless water regimen comprising:
a fish finder module comprising a temperature sensor and
a temperature processing circuit connected to the temperature
sensor;
a data communication module connected to the fish finder
module; and
a WIFI module connected to the data communication
module and configured to generate a WIFI hotspot.
Ex. 1002, 320, 322, 339.
In the Remarks section of the August 2015 Amendment, Applicant
disputed the Examiner’s finding that the temperature sensor must inherently
comprise a processing unit for processing a temperature. Ex. 1002, 331.
According to Applicant, “Hansen discloses a variety of temperature sensors,
each of which can be used without a processing unit.” Id. Applicant further
stated that “[e]xamples of the temperature sensors used in Hansen include
‘a thermoresistor, thermocouple, or semiconductor-based temperature
sensor.’ (Hansen at ¶ 96.) None of these examples requires or inherently
contains a temperature processing unit.” Id. Further, Applicant argued that
“Hansen specifically recites transmitting the signal form the temperature
sensor 110 to a remote processor, not one that is part of the fish finder
module.” Id. (emphasis omitted). And Applicant quoted Hansen’s
statement: “Signals form the temperature sensor 110 can be carried to the
downrigger system by means of the suspension wire 2 or via a separate

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conductor 111.” Id. at 331–32, quoting Hansen ¶ 96. Applicant also argued
that Hansen did not generate a WIFI hotspot, stating: “Hansen . . . does not
disclose a WIFI hotspot, only a transceiver. By generating a hotspot, the
claimed device allows a variety of mobile devices to connect, without need
for a separate modem or other equipment that would be required in the
systems disclosed in Hansen.” Id. at 332.
In November 2015, the Examiner withdrew the rejection of claim 1
based on Hansen and, inter alia, rejected claim 1 under 35 U.S.C. § 112 ¶ 1
as lacking written description support for the term “hotspot” and under 35
U.S.C. § 102(e) as anticipated by Lieberman. Ex. 1002, 346–350. Figure 1
of Lieberman is reproduced below:

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Ex. 3001, Fig. 1.
Figure 1 is a block diagram of a MSID (“Master/Slave Interface
Device) embodiment of Lieberman. Ex. 3001, 2:3–4. The embodiment
includes an MSID, an ECD (external control and display device), EODs
(external onboard devices), and EDDs (external display devices). Id. at
Fig. 1. Lieberman discloses that the EODs can include a temperature sensor
and a GPS device. Id. at 3:1–3, 14:35–39. Lieberman also discloses that
“[t]he data links between the EODs, EDDs, and the MSID can be either
Bluetooth, Wi-Fi, and/or possibly hardwire (such as an RS232
connection).” Id. at 7:7–9.
The Examiner mapped Lieberman’s MSID and ECD to the recited
fish finder and data communication modules of claim 1, respectively. Ex.
1002, 347. Further, the Examiner found that Lieberman’s disclosure of a
temperature sensor and use of WIFI disclosed the temperature sensor and
WIFI limitations of claim 1. Id.
In response, in February 2016, Applicant amended claim 1 as
follows:
1. A wireless water regimen detecting device based on
WIFI, the wireless water regimen detecting device comprising:
a fish finder module comprising a temperature sensor and
a temperature processing circuit mechanically connected to the
temperature sensor at a detecting point;
a data communication module mechanically connected to
the fish finder module at the detecting point; and
a 	WIFI 	module 	mechanically 	connected 	to 	the 	data
communication module at the detecting point and configured to
generate a WIFI hotspot.
Ex. 1002, 359, 361, 374.

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In the Remarks section of that February 2016 Amendment, Applicant
argued that the Specification describes the recited hotspot. Applicant noted
that the Specification discloses utilizing a “wireless communication way of
WIFI.” Ex. 1002, 369, citing Ex. 1002, 94 ¶ 19. 2 According to Applicant,
the Specification also discloses that this “‘wireless communication way of
WIFI,’ i.e.[,] a wireless hotspot . . . . provides at least two benefits (greater
bandwidth and ease of connectivity) as compared to conventional networks
. . . .” Ex. 1002, 369. Applicant argued that in light of these disclosures,
the Examiner should withdraw the written description rejection. Id.
In the Remarks section of that February 2016 Amendment,
Applicant also argued that “[t]he amended claims are not anticipated by
Lieberman, because Lieberman does not disclose any device in which the
fish finder module, temperature sensor, temperature processing circuit, data
communication module, and WIFI module are all at the detecting point.”
Ex. 1002, 370. In contrast, Applicant asserted: “Lieberman describes
structures in which processing and analysis, as well as the wireless signal
source, are arranged at a central MSID device.” Id.
In April 2016, the Examiner withdrew the written description
rejection and rejected claim 1 as, inter alia, anticipated by Lieberman.
Ex. 1002, 377, 381.
In June 2016, Applicant filed a Request for Continued Examination
with an Amendment that amended claim 1 as follows:
l. A wireless fish finder water regimen detecting device
configured to be deployed on water and to communicate with a
remote terminal using based on WIFI, the wireless fish finder
2 Applicant cited paragraph 15 of the Specification, but the quoted text
appears in paragraph 19. Ex. 1002, 94, 369.

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water regimen detecting device comprising:
a housing configured to be deployed on water;
a 	fish 	finder 	module 	arranged 	at 	the 	housing 	and
comprising a temperature sensor and a temperature processing
circuit mechanically connected to the temperature sensor at a
detecting point;
a data communication module arranged in the housing and
mechanical1y 	connected 	to 	the 	fish 	finder 	module 	at 	the
detecting point; and
a WIFI module arranged in the housing, mechanically
connected to the data communication module at the detecting
point, and configured to generate a WIFI hotspot to communicate
between the housing and the remote terminal.
Ex. 1002, 403, 406.
In the Remarks section of this Amendment, Applicant distinguished
Lieberman, arguing that “Lieberman is directed to a ‘Master/Slave Interface
Device (MSID)’ that serves ‘as a master or slave to a plurality of external
onboard vehicular devices.’” Id. at 417. Applicant argued that “[t]hese
‘external onboard vehicular devices,’ or EODs (see FIG. 1 of Lieberman)
are each separate, distinct devices.” Id. Applicant further asserted:
“Neither [the EODs] nor the MSID have a common housing, nor does
Lieberman disclose that any one of them has a housing configured to be
deployed on water while also having a fish finder module, a data
communication module and a WIFI module.” Id.
In November 2016, the Examiner withdrew the rejection of claim 1
based on Lieberman and rejected claim 1 as, inter alia, anticipated by two
other references. Ex. 1002, 429, 430.
In December 2016, Applicant had an interview with the Examiner
and filed a response that did not amend claim 1 or any other claim.
Ex. 1002, 451–463. In the Remarks section of that response, Applicant

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argued that the neither reference used to reject claim 1 in the November
2016 Office Action was prior art. Id. at 461–462.
In February 2017, the Examiner issued a Notice of Allowability, in
which the Examiner provided the following reasons for allowance: “the
prior art of record discloses numerous wireless fish finders (see previous
rejections), however, the prior art of record failed to teach or suggest a
wireless fish finder comprises a WIFI module for generating a WIFI
hotspot, wherein the WIFI hotspot wirelessly communicates to a remote
terminal.” Ex. 1002, 471, 472.
E. Evidence Relied Upon by Petitioner
Petitioner relies on the following references:
Reference 	Publication/Issue
Date
Exhibit
Jang 	Korean Patent Registration
No. 10-0993227
Nov. 3, 2010 	1003, 1004 3
Fairbairn 	U.S. Patent Application
Publication No.
2005/0135192 A1
June 23, 2005 	1005
Langer 	U.S. Patent No. 5,483,767 	Jan. 16, 1996 	1006
Kabel 	U.S. Patent No. 6,909,946
B1
Jun. 21, 2005 	1007
Park 	U.S. Patent Application
Publication No.
2007/0147173 A1
Jun. 28, 2007 	1008
Petitioner also relies on a declaration from James Geier. Ex. 1010.
Patent Owner relies on a declaration from Ray W. Nettleton, Ph.D.
Ex. 2001.
3 Exhibits 1003 and 1004 are Jang and its English translation, respectively.
In this opinion, we cite to the latter.

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F. Asserted Grounds
Petitioner asserts the following grounds of unpatentability based on
35 U.S.C. § 103(a):
Ground Claims
Challenged References
1 1–5, 9–11, and
15–18 Jang
2 6–8, 12–14, 19–
23 Jang and Fairbairn
3 1–4, 11, 12, 19,
and 20 Langer and Kabel
4 5–10, 13–18, and
21–23 Langer, Kabel, and Park
Pet. 5.
G. Real Parties in Interest
Petitioner identifies Deeper, UAB; Deeper Inc.; Gemini Grupe, UAB;
and Modertus, UAB as real parties in interest. Pet. 64. Patent Owner
identifies Vexilar, Inc. as its real party in interest. Paper 3, 2.
III. CLAIM CONSTRUCTION
We interpret claims in an unexpired patent using the “broadest
reasonable construction in light of the specification of the patent in which
[they] appear[].” 37 C.F.R. § 42.100(b) (2016). 4 Petitioner proposes
4 The Petition in this proceeding was filed on June 26, 2018, prior to the
effective date of the rule change that replaces the broadest reasonable
interpretation standard with the federal court claim interpretation standard.
See Changes to the Claim Construction Standard for Interpreting Claims in
Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
51,340, 51,340 (Oct. 11, 2018) (“This rule is effective on November 13,
2018 and applies to all IPR, PGR and CBM petitions filed on or after the
effective date.”).

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constructions for nine claim terms. Pet. 6–8. Patent Owner argues we only
need to construe two of those nine claim terms: WIFI and WIFI hotspot.
Prelim. Resp. 9–10.
For purposes of this Decision, we determine only WIFI hotspot
requires construction. Although Patent Owner disputes Petitioner’s
proposed construction for WIFI, that claim construction dispute does not
affect our analysis. Prelim. Resp. 11–14. The prior art references that
Petitioner relies on for teaching WIFI expressly use the term WIFI, and
Patent Owner does not dispute that the WIFI disclosed in those references is
the WIFI recited by the challenged claims. Pet. 12 (relying on Jang, which
uses the term “WIFI,” see Ex. 1004 ¶ 13); Pet. 35 (relying on Kabel, which
uses the term “WiFi,” see Ex. 1007, Abstract); Prelim Resp. 40–44, 50–54.
For the term WIFI hotspot, the parties propose the following
constructions:
Petitioner’s Proposed
Construction
Patent Owner’s Proposed
Construction
“an area that enables wireless
communication using WIFI”
“a wireless coverage area where
multiple devices can
communicate with one another
via WIFI without requiring the
Internet”
Pet. 6; Prelim. Resp. 9.
To support its proposed construction for the term, Petitioner cites the
following disclosure from the Specification, which addresses WIFI
communication:
the present invention utilizes the wireless communication way of
WIFI to make the display terminal of the fish finder module not
be limited to the wireless receiving terminal which is especially
prepared for it, but can use exciting intelligent terminals with a

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WIFI wireless communication function to display, such as smart
phone, tablet PC, notebook computer or other portable mobile
devices.
Ex. 1001, 2:41–48; Pet. 6–7. The Specification, excluding the claims,
does not use the term WIFI hotspot.
Petitioner also cites the statement Applicant made during the
prosecution of the challenged patent, when Applicant amended claim 1 to
recite the term WIFI hotspot and responded to the written description
rejection regarding the claims reciting this term. Pet. 6–7. In particular,
Petitioner cites Applicant’s statement that quoted the Specification’s
disclosure of wireless communication and equated it to a wireless hotspot:
“By using a ‘wireless communication way of WIFI,’ i.e. a wireless hotspot,
‘transmission speed . . . can be improved, and the wireless water regimen
detecting production of the present invention can be used with all kinds of
smart phones on sale.’”). Id., quoting Ex. 1002, 330, and 369, which in turn
cite Ex. 1002, 94 ¶ 15 (in actuality, however, the quoted material is at Ex.
1002, 94 ¶ 19, which is reprinted at Ex. 1001, 2:40–58).
Petitioner also relies on the recitation in dependent claims that “the
remote terminal comprises at least one of a smart phone, a table computer, a
personal computer or a wireless receiver.” Pet. 7, citing Ex. 1001, claims 5,
8, 10, 14, and 16. Petitioner argues that the wireless receiver recited by
these dependent claims includes a WIFI transceiver circuit and display
screen. Id., citing Ex. 1001, claims 4 and 5.
Patent Owner relies on the following statement Applicant made
during prosecution to distinguish Hansen: “By generating a hotspot, the
claimed device allows a variety of mobile devices to connect, without need
for a separate modem or other equipment that would be required in the

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systems disclosed in Hansen.” Prelim. Resp. 13, quoting Ex. 1002, 307.
Patent Owner also relies on the disclosure in the challenged patent of “how
to implement a point-to-point ad-hoc mode of operation, which is a
‘networking mode and dispenses with [a] wireless router.’” Prelim. Resp.
13, quoting Ex. 1001, 6:13–16.
Both parties cite the testimony of their declarants. Pet. 7, citing
Ex. 1010 ¶ 65; Prelim. Resp. 13–14, citing Ex. 2001 ¶¶ 26–27. Neither
party relies on any dictionary definitions for WIFI hotspot or on any
definition provided by any other extrinsic source, other than the testimonial
evidence from their declarants. Pet. 7; Prelim. Resp. 13–14.
On this record, we agree with and adopt Petitioner’s proposed
construction. The only non-testimonial evidence cited by either party that
implicitly defines the term WIFI hotspot is the statement where Applicant
equated a wireless hotspot with wireless communication via WIFI: “By
using a ‘wireless communication way of WIFI,’ i.e. a wireless hotspot, . . .
.” Ex. 1002, 330, 369. “A patentee’s use of ‘i.e.,’ in the intrinsic record . . .
is often definitional. Indeed, the term ‘i.e.’ is Latin for id est, which means
‘that is.’” Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., 853 F.3d
1370, 1376 (Fed. Cir. 2017) (citations omitted). The U.S. Court of Appeals
for the Federal Circuit has “explained that ‘[w]hether a statement to the
PTO that includes ‘i.e.’ constitutes a clear and unmistakable disavowal of
claim scope depends on the context.’” Id. (citation omitted). The context in
which Applicant used “i.e.” supports the conclusion that it was used to
define the term. Applicant provided this definition when arguing against a
written description rejection concerning WIFI hotspot, for which
Applicant’s definition of the term was central to Applicant’s argument.

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Ex. 1002, 346, 368–369. Under the circumstances, we find this definition
to be the most persuasive claim construction evidence cited by either party.
The additional requirement of an enabled area for communication is
essentially undisputed as both parties propose construing WIFI hotspot to
require such an area. Pet. 6 (“an area that enables wireless communication
. . .”); Prelim. Resp. 9 (“a wireless coverage area where multiple devices
can communicate . . .”). And we are unaware of anything in the prosecution
history or in the Specification of the challenged patent that would dissuade
us from construing the term WIFI hotspot as requiring an enabled area of
communication.
Regarding Patent Owner’s evidence, the non-testimonial evidence
cited by Patent Owner does not support Patent Owner’s proposed
construction. The statement during prosecution, cited by Patent Owner, that
multiple devices could connect with a WIFI hotspot does not necessarily
mean that multiple devices could communicate with each other using a
WIFI hotspot. Prelim. Resp. 13, citing Ex. 1002, 307. Rather, all that
statement requires is that more than one type of device could utilize the
hotspot. Given the lack of support for Patent Owner’s proposed
construction in the Specification and prosecution history, we are not
persuaded by Patent Owner’s testimonial evidence in support of its
proposed construction (Ex. 1002 ¶¶ 26–28).
Based on the evidence of record, we agree with and adopt
Petitioner’s proposed construction for WIFI hotspot.

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IV. ALLEGED OBVIOUSNESS
A. Principles of Law
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are “such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which
said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
406 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations, including: (1) the scope and content of
the prior art; (2) any differences between the claimed subject matter and the
prior art; (3) the level of skill in the art; and (4) objective evidence of
nonobviousness, i.e., secondary considerations. 5 Graham v. John Deere
Co., 383 U.S. 1, 17–18 (1966). “To satisfy its burden of proving
obviousness, a petitioner cannot employ mere conclusory statements. The
petitioner must instead articulate specific reasoning, based on evidence of
record, to support the legal conclusion of obviousness.” In re Magnum Oil
Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
B. Level of Ordinary Skill in the Art
Petitioner’s declarant, Mr. Geier, defines an ordinarily skilled artisan
with respect to the challenged patent as having a bachelor’s degree in
Electrical Engineering or a similar discipline and/or two or more years’
experience relating to wireless communication systems or marine
electronics, noting that additional education could substitute for less
5 Patent Owner does not contend in its Preliminary Response that such
secondary considerations are present.

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experience and vice versa. Ex. 1010 ¶ 60. Patent Owner does not dispute
this definition. Prelim Resp. 8. For purposes of this Decision, we accept
Mr. Geier’s definition of an ordinarily skilled artisan.
C. Obviousness Ground Based on Jang
As indicated above, Petitioner contends that claims 1–5, 9–11, and
15–18 are unpatentable as obvious over Jang.
1. Overview of Jang
Jang describes a “Fish finder using [a] smart phone.” Ex. 1004, 1.
Jang states that “conventional fish finders . . . require the purchase of a
personal computer or separate display this is difficult to carry around.” Id.
at Abstract. Jang indicates that it overcomes the requirement of a personal
computer or separate display by having a fish finder communicate with a
smart phone using WIFI or Bluetooth. Id. Figure 6 of Jang is reproduced
below:
Figure 6 is a block diagram illustrating WIFI or Bluetooth
communication 150 between buoy type fish finder 130 and smart phone

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200. Ex. 1004, 6–7. Rope 131-1 secures buoy type fish finder 130 to item
136, which is depicted in Figure 6, as Petitioner indicates, as a boat. Id. at
8; Pet. 10.
Figure 7 of Jang is reproduced below:
Figure 7 is a block diagram showing the front of buoy-type fish
finder 130 in more detail. Ex. 1004, 6. Buoy type fish finder 130 includes
rope hook 131, fish finder 132, patch antenna 132-1, battery 132-2, buoy
133, control module 134, and ultrasonic sensor 135. Id. at 8–9.
Figure 9 of Jang is reproduced below:

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Fig. 9 is a block diagram illustrating the functions of fish finder app
software 220 on smartphone 200. Ex. 1004, 6, 10. Portion 244 of liquid
crystal display 216 displays current speed and water temperature. Id. at 10,
11. 6
6 Paragraph 58 of Jang uses the number “244” to designate the current
speed/water temperature display portion. Ex. 1004, 10. Paragraph 74 of
Jung uses the number “243” for the same designation. Id. at 11.

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2. Claim 1
Petitioner argues that, for each limitation of claim 1, Jang teaches that
limitation or that limitation would have been an obvious design choice in
light of Jang. Pet. 10–13. We focus on the limitation in claim 1 that the
fish finder module comprises “a temperature processing circuit.” As
discussed below, Petitioner relies on conclusory, unsupported testimony to
prove that Jang teaches this limitation or that the limitation is an obvious
design choice, but such testimony is not sufficient. See Magnum Oil, 829
F.3d. at 1380 (“To satisfy its burden of proving obviousness, a petitioner
cannot employ mere conclusory statements.”); 37 C.F.R. § 42.65(a)
(“Expert testimony that does not disclose the underlying facts or data on
which the opinion is based is entitled to little or no weight.”); Office Trial
Practice Guide Update (August 2018), 7 4–5 (explaining that expert
testimony cannot take the place of a disclosure of a prior art reference that
is required as part of the unpatentability analysis).
For the limitation that the fish finder module comprises a temperature
processing circuit, Petitioner contends Jang describes such a fish finder
module. Pet. 11–12. Alternatively, Petitioner contends that adding such a
temperature processing circuit to Jang’s fish finder module would have
been an obvious design choice. Id. at 12. For both assertions, Petitioner
cites testimony of its declarant, Mr. Geier. Id. at 11–12.
7 Office Trial Practice Guide Update (August 2018) is available at
https://www.uspto.gov/sites/default/files/documents/
2018_Revised_Trial_Practice_Guide.pdf; see also Office Trial Practice
Guide, August 2018 Update, 83 Fed. Reg. 39989 (Aug. 13, 2018) (Notice
of update).

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For Jang’s alleged description of a fish finder module comprising a
temperature processing circuit, Petitioner argues that Jang discloses “a fish
finder module arranged at the housing (the spherical buoy-type float) and an
ultrasonic sensor (135) that transmits and receives ultrasonic waves.” Pet.
11, citing Ex. 1004 ¶ 43. Further, Petitioner argues that Jang “discloses the
display of, among other things, ‘current speed/water temperature’ and
expressly includes ‘temperature’ among data that can be displayed.” Id.,
quoting Ex. 1004 ¶¶ 58, 73. Petitioner concludes that these disclosures in
Jang teach “that Jang includes a temperature sensor and a temperature
processing circuit connected to the temperature sensor to generate the
information specifically displayed on the display terminal, such as a smart
phone screen.” Id. at 11–12, citing Ex. 1010 ¶¶ 110–111. Petitioner relies
solely on the testimony of Mr. Geier to support that conclusion. Id.
For the allegedly obvious design choice, Petitioner makes the
following conclusory statement, citing the testimony of Mr. Geier:
Even if such claimed temperature sensor and circuit were not
explicitly or inherently disclosed by Jang, including such a
sensor and circuit would be a routine and obvious design choice
to a [person of ordinary skill in the art (POSITA)], within the
knowledge of a POSITA, and a POSITA would have been
motivated to include such a sensor to achieve the data output
expressly 	contemplated 	and 	displayed 	on 	the 	wirelessly
connected smart phone of Jang.
Pet. 12, citing Ex. 1010 ¶¶ 110–112.
This conclusory analysis set forth in the Petition regarding Jang’s
alleged teaching of the recited temperature processing circuit and the
purportedly obvious design choice for such a circuit, by itself, renders
Petitioner’s showing insufficient. But even if we were to go beyond the
Petition and also consider the cited testimony of Mr. Geier, Petitioner’s

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showing would still be insufficient because that cited testimony is itself
conclusory. For Jang’s alleged disclosure of the recited temperature
processing circuit, Mr. Geier testifies that the “fish finder of Jang discloses
the display of, among other things, ‘current speed/water temperature’ and
includes ‘temperature’ among data that can be displayed.” Ex. 1010 ¶ 111,
citing Ex. 1004 ¶¶ 58, 73, Fig. 9. Based solely on this disclosure, Mr. Geier
concludes that “[i]n order for the display on the mobile phone in Jang to
display temperature, the sensor in the Jang fish finder must necessarily
include a temperature sensor and an associated connected temperature
processing circuit to allow for such temperature data to be generated and
displayed.” Id. Mr. Geier, however, cites no evidence and provides no
analysis to support that conclusion. Id. Similarly, Mr. Geier testifies that
“the spherical buoy fish finder module of Jang shows the sensor within the
housing, and a POSITA would recognize that the sensor includes a
temperature sensor (so that the water temperature can be displayed as
shown in Figure 9 and disclosed in, for example, ¶[0058] and ¶[0073]).” Id.
From this, Mr. Geier concludes that “[s]uch a temperature sensor would
also have a mechanically connected circuit to a temperature value that can
be transmitted via Wi-Fi.” Id. Mr. Geier, however, cites no evidence and
provides no analysis to support that conclusion either. Id.
For the allegedly obvious design choice to add a temperature
processing circuit to Jang’s fish finder module, Mr. Geier’s testimony is
equally conclusory. Mr. Geier testifies: “To the extent such a temperature
sensor and mechanically connected temperature processing circuit were not
disclosed explicitly or inherently (even though they are), including such
components would be a trivial and routine design choice well known to a

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POSITA.” Ex. 1010 ¶ 112. Mr. Geier cites no evidence and provides no
analysis to support that conclusion. Id. Instead, Mr. Geier provides the
equally conclusory statement that adding and mechanically connecting the
temperature processing circuit to the temperature sensor would have been
routine to a person of ordinary skill in the art:
Based 	on 	my 	experience, 	for 	a 	POSITA, 	mechanically
connecting a sensor and circuit is routine, typical, and obvious,
and including a temperature sensor and processing circuit to
generate the current water temperature explicitly shown on the
display in, for example, Figure 9 of Jang, would be routine,
typical, and obvious to a POSITA based on his or her knowledge
and the teachings of Jang.
Id.
Petitioner, however, cannot rely on conclusory testimony to prove
that Jang teaches the recited temperature processing circuit or that such a
circuit would have been an obvious design choice. Magnum Oil, 829 F.3d
at 1380; 37 C.F.R. § 42.65(a). The assertion that Jang teaches the recited
temperature processing circuit or that such a circuit would have been an
obvious design choice is central to Petitioner’s case, and, as such, it is not
amenable to conclusory support.
In addition, inherent disclosure of a mechanically connected
temperature processing circuit was a disputed issue during the prosecution
of the challenged patent, further making conclusory statements regarding
the involved teaching untenable. As discussed above, the Examiner found
that the disclosure of a temperature sensor in Hansen inherently disclosed
the associated temperature processing circuitry, stating that in Hansen, “the
temperature sensor is a standalone unit which inherently/must comprise[] a
processing unit for processing temperature or processing temperature by

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processor 201 (fig. 2, paragraph 28).” Ex. 1002, 273. Applicant disputed
that finding, arguing that none of the temperature sensors in Hansen
required a temperature processing unit nor inherently had one. Id. at 331.
And ultimately, the Examiner allowed claim 1 over Hansen. Particularly, in
light of the dispute during prosecution regarding whether a reference that
discloses a fish finder module comprising a temperature sensor inherently
discloses a temperature processing circuit in that same module, more than
mere conclusory testimony is needed to show that the requisite temperature
processing circuit is taught by Jang or that it would have been an obvious
design choice. Ex. 1002, 273, 331.
Accordingly, in light of the above, and particularly in light of the
prosecution history of the challenged patent, we determine Petitioner has
not demonstrated a reasonable likelihood of prevailing in its challenge that
claim 1 would have been obvious over Jang.
There is, however, an additional and independent reason that
Petitioner does not demonstrate a reasonable likelihood of prevailing in its
challenge that the subject matter of claim 1 would have been obvious over
Jang. Independent claim 1, unlike independent claims 19 and 22, recites “a
fish finder module arranged at the housing and comprising a temperature
sensor and a temperature processing circuit mechanically connected to the
temperature sensor” (emphasis added). As discussed above, Petitioner
contends that Jang’s display of “current speed/water temperature” teaches
“a temperature sensor and temperature processing circuit connected to the
temperature sensor to generate the desired information specifically
displayed on the display terminal, such as a smart phone screen.” Pet. 11–
12, citing Ex. 1004 ¶¶ 58, 73, Fig. 9; Ex. 1010 ¶¶ 110–11. Although

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Petitioner here contends Jang discloses “the temperature sensor connected
to the temperature circuit,” Petitioner does not address the specific type of
connection recited in claim 1: “a temperature processing circuit
mechanically connected to the temperature sensor.” See Pet. 11–12. Jang’s
display of current speed/water temperature on a smart phone does not teach
or suggest mechanically connecting a temperature processing circuit to a
temperature sensor.
3. Claims 2–5, 9–11, and 15–18
Claims 2–5, 9–11, and 15–18 each depend directly or indirectly on
claim 1, and Petitioner relies on its showing for claim 1 for these dependent
claims. 	Pet. 8–19. Thus, for the reasons discussed above for claim 1, we
determine Petitioner has not demonstrated a reasonable likelihood of
establishing that claims 2–5, 9–11, and 15–18 would have been obvious
over Jang.
D. Obviousness Ground Based on Jang and Fairbairn
As indicated above, Petitioner contends that claims 6–8, 12–14, and
19–23 are unpatentable as obvious over the combination of Jang and
Fairbairn.
1. Claims 6–8, 12–14
Claims 6–8 and 12–14 each depend directly or indirectly on claim 1.
For these dependent claims, Petitioner does not rely on Fairbairn as
teaching or suggesting a fish finder module that comprises a temperature
processing circuit as recited by claim 1 or making such a fish finder module
an obvious design choice. Pet. 11–12, 21–24. Instead, Petitioner relies on
the showing it made for claim 1 for this limitation. Id. Thus, for the
reasons discussed above for Petitioner’s showing regarding the alleged

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obviousness of claim 1 over Jang, we determine Petitioner has not
demonstrated a reasonable likelihood of establishing that claims 6–8 and
12–14 would have been obvious over Jang and Fairbairn.
2. Claim 19
Claim 19 is a method claim that recites the use of a fish finder
module arranged at a housing that has a temperature processing circuit in it.
In particular, claim 19 recites “a fish finder module arranged at a housing”
and “a temperature processing circuit arranged in the housing.” Petitioner
provides essentially the same showing for these limitations as for the
limitation in claim 1 of a fish finder module comprising a temperature
processing circuit. As with claim 1, Petitioner argues that Jang discloses
the temperature processing circuit recited by claim 19 or that adding such a
circuit to Jang would have been an obvious design choice. Pet. 26–27.
Petitioner’s arguments for claim 19 regarding Jang’s alleged disclosure of
the temperature processing circuit or the allegedly obvious design choice
are reproduced below:
Jang 	discloses 	converting 	a 	thermal 	effect 	detected 	by 	a
temperature sensor to a temperature value at a temperature
processing circuit arranging in the housing. 	(Geier-Decl.(Ex-
1010), ¶¶177-178). The fish finder of Jang discloses the display
of, among other things, “current speed/water temperature” and
expressly 	includes 	“temperature” 	among 	data 	that 	can 	be
displayed. (Ex-1004, ¶[0058], l. 5; Fig. 9 (“Current speed/water
temp. display portion”); ¶[0073] (“fish data display (216) can
display…current speed and water temperature”). This disclosure
teaches 	that 	Jang 	includes 	a 	temperature 	sensor 	and 	a
temperature processing circuit connected to the temperature
sensor to generate the desired information specifically displayed
on the display terminal, such as a smart phone screen. 	(Geier-
Decl.(Ex-1010), ¶178). Even if such claimed temperature sensor
and circuit were not explicitly or inherently disclosed by Jang,

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including such a sensor and circuit would be a routine and
obvious design choice to a POSITA, within the knowledge of a
POSITA, and a POSITA would have been motivated to include
such a sensor to achieve the data output expressly contemplated
and displayed on the wirelessly connected smart phone of Jang.
(Id.; see also ¶112).
Pet. 26–27.
As with claim 1, these arguments cite conclusory testimony of Mr.
Geier with respect to the recited temperature processing circuitry. See Ex.
1010 ¶¶ 112, 178. As discussed above for claim 1, such testimony does not
suffice to demonstrate a reasonable likelihood of prevailing on an
obviousness challenge to claim 19. Accordingly, we determine Petitioner
has not demonstrated a reasonable likelihood of prevailing in its challenge
to claim 19 as obvious over Jang and Fairbairn.
3. Claims 20 and 21
Claims 20 and 21 each depend directly or indirectly on claim 19, and
for these dependent claims, Petitioner relies on its showing for claim 19.
Pet. 24–30. Accordingly, for the reasons discussed above for claim 19, we
determine Petitioner has not demonstrated a reasonable likelihood of
prevailing in its challenge to claims 20 and 21 as obvious over Jang and
Fairbairn.
4. Claims 22 and 23
Claim 23 depends on independent claim 22. On this record,
Petitioner has demonstrated a reasonable likelihood of prevailing in its
challenge to claims 22 and 23 as obvious over Jang and Fairbairn. First,
neither claim 22 nor 23 recites a “temperature processing circuit,” so
Petitioner’s showing regarding these claims does not have the same

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deficiency discussed above for claims 1–21. Second, we do not agree on
this record with the arguments Patent Owner makes regarding the alleged
deficiencies in Petitioner’s showing for claims 22 and 23. In particular,
Patent Owner argues Petitioner (i) provides an insufficient basis for
combining Jang and Fairbairn and (ii) provides an insufficient showing that
Jang discloses the “WIFI hotspot” recited by claim 22. Prelim. Resp. 47–
48. We do not agree with either argument.
Regarding the combination of Jang and Fairbairn, as Patent Owner
notes, Petitioner does not rely upon Fairbairn for any limitation of claim 22.
Pet. 30–33; Prelim. Resp. 47. Nor does Petitioner rely on Fairbairn for any
additional limitation of claim 23. Pet. 33. Therefore, any alleged
deficiency in Petitioner’s reasons for combining Jang and Fairbairn would
not affect Petitioner’s substantive showing. Realtime Data, LLC v. Iancu,
__ F.3d __, No. 2018-1154, 2019 WL 149835, at *4 (Fed. Cir. Jan. 10,
2019) (holding that “the Board was not required to make any finding
regarding a motivation to combine given its reliance on [one prior art
reference] alone”).
Regarding Jang’s alleged teaching of a WIFI hotspot, we deem
Petitioner’s showing to be sufficient on this record. As explained above, we
interpret “WIFI hotspot” to mean “an area that enables wireless
communication using WIFI.” See supra Section III. Petitioner argues that
Jang’s fish finder communicates via WIFI and that Jang’s “WIFI as used in
the present invention is a local area network (LAN) . . . that enable[s] use of
high-speed internet within a certain range of an access point (AP).” Pet.
31–32, quoting Ex. 1004 ¶ 13. Petitioner provides more than conclusory
testimony to support this argument. Id. Patent Owner argues that (i) WIFI

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and a WIFI hotspot should not be equated because they are separate claim
terms, (ii) Jang does not describe how to generate WIFI communications,
and (iii) Jang would not generate a WIFI hotspot with Patent Owner’s
proposed construction because of its use of “high-speed internet.” Id. at
43–44. We are not persuaded on this record by any of these arguments.
First, Petitioner’s contentions do not require that the terms WIFI and
WIFI hotspot be equated. Petitioner has proposed different constructions
for the two terms, and even if we were to accept Patent Owner’s proposed
construction for WIFI, the terms WIFI and WIFI hotspot would still differ:
WIFI would refer to that specific protocol identified by Patent Owner and
WIFI hotspot would refer to communication over an area using that
protocol. The terms WIFI and WIFI hotspot would be distinct using either
party’s proposed construction for WIFI.
Second, as Petitioner points out, Jang expressly discloses the use of
“WIFI” in its system via a local area network that enables use of high-speed
internet within range of an access point. See Pet. 31–32; Ex. 1004 ¶ 13.
Whether Jang discloses specific technical detail of how to generate WIFI
communications is immaterial given that express disclosure. Further, based
on the evidence of record, WIFI communications and how to generate them
for over-the-air communications, like those used in Jang, were well known
by the filing of the challenged patent. Mr. Geier testifies that “[b]y the time
of the alleged invention of the ’592 patent, Wi-Fi was a well-established,
widely known, and prevalently used wireless communications technology.”
Ex. 1010 ¶ 28; Pet. 34–35 (asserting WIFI wireless communications were
well known), citing Ex. 1010 ¶ 28. Mr. Geier further testifies that, by the
filing of the challenged patent, he had already written a book on designing

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and deploying WIFI in wireless networks. Ex. 1010 ¶ 28. Patent Owner
and its declarant also propose an interpretation for “WIFI” based on the
IEEE 802.11 standard, which was known at the time. See Prelim. Resp. 11–
12; Ex. 2001 ¶¶ 22–25. And Patent Owner cites no evidence showing that
an ordinarily skilled artisan would not have appreciated the above
disclosure in Jang or would have been unable to generate WIFI
communications as contemplated in Jang’s system. Prelim. Resp. 40–44,
47.
Third, as described above, we do not adopt Patent Owner’s proposed
construction for the term WIFI hotspot, so whether Jang’s use of high-speed
internet means Jang would disclose a WIFI hotspot with Patent Owner’s
proposed construction is immaterial.
Petitioner also explains sufficiently on this record how the additional
limitations of claims 22 and 23 that are not disputed by Patent Owner are
taught by Jang. Pet. 30–33. For example, Petitioner relies on Jang’s
spherical housing for the recited “housing configured to be deployed on
water.” See Pet. 30, citing Ex. 1004 ¶¶ 9, 36, 41, 43, Fig. 6. Petitioner
relies on Jang’s ultrasonic sensor and ultrasonic detection circuits for the
recited “sonar sensor” and “sonar detecting circuit.” 	Pet. 30–31, citing Ex.
1004 ¶¶ 16, 19, 29, Figs. 7, 8. For the recited “data communication
module,” Petitioner relies on Jang’s control module 134 and power source
138. Pet. 31, citing Ex. 1004 ¶ 42, Fig. 8. Petitioner relies on Jang’s smart
phone for the recited “remote terminal.” Pet. 32, citing Ex. 1004 ¶ 1,
Figs. 1, 8. Accordingly, Petitioner has established a reasonable likelihood
of prevailing in its challenge to claims 22 and 23 as obvious over Jang and
Fairbairn.

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E. Obviousness Grounds Based on Langer and Kabel,
and Langer, Kabel, and Park
As discussed above, Patent Owner argues that claims 1–4, 11, 12, 19,
and 20 would have been obvious over Langer and Kabel and that claims 5–
10, 13–18, and 21–23 would have been obvious over Langer, Kabel, and
Park.
1. Overview of Langer
Langer is directed to a method and apparatus for detecting the
presence of fish and other underwater objects using a fish attractor and an
underwater sensor assembly. Ex. 1006, Abstract. Figure 5 of Langer is
reproduced below:
Figure 5 is a diagrammatic view of Langer’s fish detection system. Ex.
1006, 3:57. In Figure 5, underwater detection system 84 includes sensor 86
that is coupled to lure 88. Id. at 12:57–58. Sensor 86 transmits signals

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through the water to detector 90, which is placed on an underwater surface
of boat hull 92. Id. at 12:58-60. Alternatively, Langer discloses that
detector 90 may be disposed on various items that may be suspended over
the side of the boat to put the detector in the water. Id. at 12:61–64.
Amplifier 93 provides the output signals to output circuit 94, which may be
a visual display, a headset, or another device that can provide a sensory
indication to an angler. Id. at 12:65–13:3.
2. Overview of Kabel
Kabel is directed to a system and method for wirelessly linking
electronic marine components to reduce or eliminate the need for
application-specific wiring between those components and their associated
displays. Ex. 1007, [54], 1:60–65. Figures 1 and 2 of Kabel are reproduced
below:

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Figure 1 is a block diagram depicting system 10, which is used to
wirelessly link electronic marine components. Figure 2 is an isometric view
of a helm marine vessel 12 with mounted portions of system 10. Ex. 1007,
2:64–3:3, 3:21–23.
System 10 includes electronic marine components 14, displays 16,
wireless control unit 18, wireless transmitters 20, antennas 22, receivers 24,
antennas 26, controller 28, transceiver 30, and radio frequency antenna 32.
Ex. 1007, 3:21–4:9. Wireless control unit 18 is preferably “configured and
programmed to use BlueTooth or WiFi transmission protocols.” Id. at
4:10–12. And wireless transmitters 20 and wireless receivers 24 “transmit

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and receive . . . data via BlueTooth or WiFi communication protocols.” Id.
at Abstract.
3. Combining Langer and Kabel to Generate a WIFI Hotspot
We focus on the limitations in the independent challenged claims
regarding generating a WIFI hotspot: in particular, claim 1’s recitation of “a
WIFI module arranged in the housing . . . configured to generate a WIFI
hotspot”; claim 19’s recitation of “generating a WIFI hotspot at the
housing”; and claim 22’s recitation of “a WIFI module arranged in the
housing . . . configured to generate a WIFI hotspot.” We find that Petitioner
has made an insufficient showing with respect to these limitations.
Petitioner argues that Langer discloses components that engage in
wireless communications, but Petitioner does not argue that those
components generate a WIFI hotspot. Pet. 38. Instead, Petitioner argues
that an ordinarily skilled artisan would have modified a wireless
transmitting component in Langer to generate such a hotspot. Id. 	The only
specific component that Petitioner identifies for such modification is
transmitter assembly 16. Id. Petitioner, however, also suggests that sensor
86 could be modified to generate a WIFI hotspot. Id. at 34–35. Both
transmitter assembly 16 and sensor 86 in Langer, however, are used
underwater. Transmitter assembly 16 is part of sensor assembly 13, which
is part of underwater portion 11 of Langer’s detection system 10. Ex. 1006,
4:22–41. Sensor 86 is part of underwater detection system 84. Id. at
12:56–57; see also Fig. 5.
Petitioner argues that Langer discloses wireless communications and
WIFI was a well-known wireless communication at the time of the filing of
the challenged patent. Pet. 34–35. Petitioner cites Kabel as disclosing

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WIFI communication between components for angling and argues that an
ordinarily skilled artisan would have been motivated to combine the
teachings of Langer and Kabel to generate a WIFI hotspot. Id.
Petitioner’s proffered reasons for modifying Langer’s transmitters to
generate a WIFI hotspot are conclusory and do not address, for example, the
underwater use of transmitter assembly 16 or sensor 86. Petitioner merely
states: “A POSITA would have been motivated to combine the teachings of
Langer and Kabel to achieve a wireless fish finder that uses WIFI, i.e., a
hotspot, to communicate, and transmit and receive data, between a fish
finder and a display terminal.” Pet. 35, citing Ex. 1010 ¶ 209. This
conclusory rationale alone renders Petitioner’s showing insufficient. But
even if we were to go beyond the Petition and also consider the cited
testimony of Mr. Geier, Petitioner’s showing would still be insufficient
because that testimony is similarly conclusory:
I believe a POSITA would be motivated to combine
Langer and Kabel at least because they both pertain to marine
electronics 	and 	are 	aimed 	at 	assisting 	anglers 	locate 	fish
effectively. 	The Wi-Fi protocol was well-known as a wireless
form of communication to a POSITA by 2012, and utilizing Wi-
Fi as the wireless communication would have been a routine and
obvious 	design 	choice 	to 	a 	POSITA. 	Wi-Fi 	permits 	the
transmission of data efficiently and its use would have been
desired by 2012 for convenience as well. 	The Wi-Fi protocol
was standardized and known to a POSITA, and utilizing Wi-Fi
as the wireless communication with the Langer fish finder would
lead to predictable results.
Ex. 1010 ¶ 209.
Absent from Petitioner’s rationale and cited testimony is any
discussion of whether or how WIFI would work for the underwater wireless
communications of transmitter assembly 16 or sensor 86. Petitioner does

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not argue that Kabel discloses the use of WIFI for underwater
communications, and the BlueTooth or WIFI communications illustrated in
Kabel do not appear to be underwater. Ex. 1007, Figs. 1, 2. Dr. Nettleton
testifies that WIFI would not work for Langer’s underwater
communications. Ex. 2001 ¶¶ 73–80, citing Ex. 2004. As discussed above,
the disclosures cited by Petitioner indicate that the involved
communications are underwater. And other disclosures in Langer note the
underwater location of Langer’s sensors. For example, the Abstract
describes: “A method and apparatus for detecting the presence of fish and
other underwater objects includes a fish attractor and an underwater sensor
assembly coupled to the fish attractor.” Ex. 1006, Abstract; see also 1:6–7;
Fig. 12A.
Considering the conclusory nature of Petitioner’s rationale for
combining the teachings of Langer and Kabel, the conclusory nature of Mr.
Geier’s testimony in support of that rationale, that transmitter assembly 16
and sensor 86 are described as being underwater, and that Petitioner has not
addressed the involved underwater communications, we determine
Petitioner has not provided a sufficient showing for modifying Langer to
generate the requisite WIFI hotspot. Thus, we determine that Petitioner has
not demonstrated a reasonable likelihood of success in prevailing in its
challenges to claims 1–4, 11, 12, 19, and 20 based on Langer and Kabel,
and claims 5–10, 13–18, and 21–23 based on Langer, Kabel, and Park.
V. DENIAL OF INSTITUTION
Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
instituted “unless . . . the information presented in the petition . . . and any
response . . . shows that there is a reasonable likelihood that the petitioner

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would prevail with respect to at least 1 of the claims challenged in the
petition.” But even when a petitioner demonstrates a reasonable likelihood
of prevailing with respect to one or more claims, institution of review
remains discretionary. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018)
(“[Section] 314(a) invests the Director with discretion on the question
whether to institute review . . . .” (emphasis omitted)); Harmonic Inc. v.
Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
permitted, but never compelled, to institute an IPR proceeding.”). In
exercising that discretion, we are guided by the statutory requirement, in
promulgating regulations for inter partes review, to consider the effect of
any regulations on “the efficient administration of the Office [and] the
ability of the Office to timely complete proceedings,” 35 U.S.C. § 316(b),
as well as the requirement to construe our rules to “secure the just, speedy,
and inexpensive resolution of every proceeding,” 37 C.F.R. § 42.1(b).
Office guidance, issued June 5, 2018, also explains that the Board may
consider the number of claims and grounds that meet the reasonable
likelihood standard when deciding whether to institute inter partes review
under 35 U.S.C. § 314(a). SAS Q&A’s, Part D, Effect of SAS on Future
Challenges that Could Be Denied for Statutory Reasons (June 5, 2018),
available at https://www.uspto.gov/sites/default/files/documents/
sas_qas_20180605.pdf (“[T]he panel will evaluate the challenges and
determine whether, in the interests of efficient administration of the Office
and integrity of the patent system (see 35 USC § 316(b)), the entire petition
should be denied under 35 USC § 314(a).”). Here, Petitioner challenged
twenty-three claims under four asserted grounds of unpatentability, with
each claim being the subject of two separate grounds. Petitioner

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demonstrates a reasonable likelihood of prevailing with respect to only two
claims on one asserted ground. On this record, and based on the particular
facts of this proceeding, instituting a trial with respect to all twenty-three
claims and on all four grounds based on evidence and arguments directed to
only two claims and one ground would not be an efficient use of the
Board’s time and resources. See, e.g., Chevron Oronite Co. v. Infineum
USA L.P., Case IPR2018-00923, slip op. at 10–11 (PTAB Nov. 7, 2018)
(Paper 9). Thus, we do not institute an inter partes review.
VI. ORDER
It is hereby:
ORDERED that, pursuant to 35 U.S.C. § 314, the Petition is denied
and no inter partes review is instituted.

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PETITIONER:
Marc A. Cavan
HARRISON LAW LLC
marccavan@hlawllc.com
PATENT OWNER:
Thomas J. Leach
Michael S. Wagner
Andrew Lagatta
MERCHANT & GOULD P.C.
tleach@merchantgould.com
alagatta@merchantgould.com
mwagner@merchantgould.com